DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/289,075, filed on 04/27/2021.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8, 13, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 13, and 18 of U.S. Patent No. 12,171,036 B2. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claim 1, Issued claim 1 of US 12,171,036 B2 discloses
a portable communication device comprising: (Lines 1-1)
wireless communication circuitry configured to support a cellular communication; and (Lines 2-3)
a processor operatively coupled with the wireless communication circuitry, the processor configured to control the wireless communication circuitry to: (Lines 4-6)
perform, using a first radio resource, the cellular communication with a base station external to the portable communication device, (Lines 7-9)
transmit, to the base station, a first indication indicative of an overheating state of the portable communication device, using the first radio resource for the cellular communication, (Lines 10-13)
receive, from the base station, a first radio resource control (RRC) connection reconfiguration message including a second indication indicative of a second radio resource decreased as compared with the first radio resource, (Lines 14-18)
transmit, to the base station, a first RRC reconfiguration complete message in response to the first RRC connection reconfiguration message, (Lines 19-21)
receive, from the base station, a second RRC connection reconfiguration message including a third indication indicative of a third radio resource increased as compared with the second radio resource, and (Lines 22-25)
transmit, to the base station, a second RRC reconfiguration complete message in response to the second RRC connection reconfiguration message to indicate that the third radio resource is to be used for the cellular communication. (Lines 26-30)
Issued claim 1 further discloses overheating state.
Pending claim 1 does not disclose overheating state, instead pending claim 1 discloses ‘thermal state’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 1 of the current application merely broadens the scope of issued claim 1 of Patent No. 12,171,036 B2 by substituting ‘overheating’ with ‘thermal’.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 8, Issued claim 13 (includes claim 11) of US 12,171,036 B2 discloses
A base station comprising: (Lines 1-1 ; claim 11)
wireless communication circuitry; and (Lines 2-2 ; claim 11)
a processor operatively coupled to the wireless communication circuitry, the processor configured to control the wireless communication circuitry to: (Lines 3-5 ; claim 11)
perform, using a first radio resource, a cellular communication with a portable communication device external to the base station, (Lines 8-10 ; claim 11)
receive, from the portable communication device, a first indication indicative of an overheating state of the portable communication device, (Lines 6-7 ; claim 11)
using the first radio resource for the cellular communication,
transmit, to the portable communication device, a first radio resource control (RRC) connection reconfiguration message including a second indication indicative of a second radio resource decreased as compared with the first radio resource, (Lines 8-13 ; claim 11)
receive, from the portable communication device, a first RRC reconfiguration complete message in response to the first RRC connection reconfiguration message, (Lines 14-17 ; claim 11)
transmit, to the portable communication device, a second RRC connection reconfiguration message including a third indication indicative of a third radio resource increased as compared with the second radio resource, and (Lines 18-25 ; claim 11)
receive, from the portable communication device, a second RRC reconfiguration complete message in response to the second RRC connection reconfiguration message to indicate that the third radio resource is to be used for the cellular communication. (Lines 1-6; claim 13)
Issued claim 13 further discloses overheating state.
Pending claim 8 does not disclose overheating state, instead pending claim 1 discloses ‘thermal state’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 8 of the current application merely broadens the scope of issued claim 13 of Patent No. 12,171,036 B2 by substituting ‘overheating’ with ‘thermal’.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 13, Issued claim 6 of US 12,171,036 B2 discloses
A method of operating a portable communication device, the method comprising: (Lines 1-2)
performing, using a first radio resource, cellular communication with a base station external to the portable communication device; (Lines 3-6)
transmitting, to the base station, a first indication indicative of an overheating state of the portable communication device, using the first radio resource for the cellular communication; (Lines 7-11)
receiving, from the base station, a first radio resource control (RRC) connection reconfiguration message including a second indication indicative of a second radio resource decreased as compared with the first radio resource; (Lines 12-16)
transmitting, to the base station, a first RRC reconfiguration complete message in response to the first RRC connection reconfiguration message; (Lines 17-20)
receiving, from the base station, a second RRC connection reconfiguration message including a third indication indicative of a third radio resource increased as compared with the second radio resource; and (Lines 21-24)
transmitting, to the base station, a second RRC reconfiguration complete message in response to the second RRC connection reconfiguration message to indicate that the third radio resource is to be used for the cellular communication. (Lines 25-29)
Issued claim 6 further discloses overheating state.
Pending claim 13 does not disclose overheating state, instead pending claim 1 discloses ‘thermal state’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 13 of the current application merely broadens the scope of issued claim 6 of Patent No. 12,171,036 B2 by substituting ‘overheating’ with ‘thermal’.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 18, Issued claim 18 (including claim 16) of US 12,171,036 B2 discloses
A method of operating a base station, the method comprising: (Lines 1-2 ; claim 16)
performing, using a first radio resource, a cellular communication with a portable communication device external to the base station; (Lines 5-7 ; claim 16)
receiving, from the portable communication device, a first indication indicative of an overheating state of the portable communication device, using the first radio resource for the cellular communication; (Lines 3-5 ; claim 16)
transmitting, to the portable communication device, a first radio resource control (RRC) connection reconfiguration message including a second indication indicative of a second radio resource decreased as compared with the first radio resource; (Lines 8-13 ; claim 16)
receiving, from the portable communication device, a first RRC reconfiguration complete message in response to the first RRC connection reconfiguration message; (Lines 14-16 ; claim 16)
transmitting, to the portable communication device, a second RRC connection reconfiguration message including a third indication indicative of a third radio resource increased as compared with the second radio resource; and (Lines 17-23; claim 16)
receiving, from the portable communication device, a second RRC reconfiguration complete message in response to the second RRC connection reconfiguration message to indicate that the third radio resource is to be used for the cellular communication. (Lines 1-5; claim 18)
Issued claim 18 further discloses overheating state.
Pending claim 18 does not disclose overheating state, instead pending claim 1 discloses ‘thermal state’.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 18 of the current application merely broadens the scope of issued claim 18 of Patent No. 12,171,036 B2 by substituting ‘overheating’ with ‘thermal’.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Allowable Subject Matter
Claims 2-7, 9-12, 14-17, 19, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/BRIAN T O CONNOR/Primary Examiner, Art Unit 2465 September 24, 2026
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